Trademarks Cancelled Due to Overlap with Patent

A federal appeals court reinforced the line between patent and trademark law earlier this month by striking down efforts by a medical device company to trademark the signature look of its products achieved through a process described in a patent.

On January 3, 2025, the United States Court of Appeals for the Federal Circuit affirmed a decision by the Trademark Trial and Appeal Board (TTAB) to cancel medical device manufacturer CeramTec GmbH’s (CeramTec) trademarks associated with the pink color of its ceramic hip components. In doing so, the court reaffirmed the doctrine that functional product features are ineligible for trademark protection. While the underlying expired utility patent was primarily concerned with the increased toughness of its materials, the process for doing so also happened to turn the ceramic hip components pink. Affirming the TTAB’s analysis, the court found that the pink coloration of CeramTec’s ceramic hip components was a function protectable by a patent but not protectable by trademarks.

Background

CeramTec, a manufacturer of ceramic hip components, is an industry leader and marketed certain of its ceramic hip components under the name Biolox Delta. The chemical composition of Biolox Delta included the addition of chromium oxide (chromia), which CeramTec found to increase the toughness, hardness, stability and suppression of brittleness in its ceramic parts. It also found that the addition of chromia resulted in Biolox Delta turning a pink color. Biolox Delta became a prominent choice in hip replacement surgeries due to its resilience and material qualities.

CeramTec secured U.S. Patent 5,830,816 (‘816 patent), which identified the useful characteristics of the addition of chromia into ceramic hip components, including increased hardness levels that help to maintain shape and resist deformation. The patent, as well as its associated prosecution history, also noted that the addition of chromia resulted in the material taking on a pink color. After years of touting the superior quality of its pink products, CeramTec sought to protect its use of the color, which differentiated its products in a competitive marketplace. In 2012—one year prior to the expiration of the ‘816 patent—CeramTec registered trademarks for the pink coloration of its ceramic hip components.

CoorsTek Bioceramics LLC (CoorsTek), a direct competitor in the medical device industry, also manufactures similar products, including products in pink and white. In 2014, CoorsTek initiated legal challenges against CeramTec’s pink color trademarks, filing a cancellation petition with the TTAB and a related lawsuit in the District of Colorado. CoorsTek’s primary argument was that the pink color was functional and thus ineligible for trademark protection under U.S. law.

TTAB Findings and Decision

The TTAB reviewed CeramTec’s trademarks based on an analysis of functionality, using the four-factor framework established in In re Morton–Norwich Products, Inc., 671 F.2d 1332 (1982). This framework evaluates whether a trademarked design or feature is essential to the use or purpose of a product or whether it affects the cost or quality of the product.

The finding of functionality was primarily determined by the first factor, which considered whether there was a utility patent disclosing the functional advantages of the design. CeramTec’s expired ‘816 patent, related patents and patent prosecution history explicitly disclosed that the addition of chromia to its ceramic components resulted in improved material properties, including enhanced hardness, toughness and durability.

The TTAB also found that the pink color created by the process was not “ornamental, incidental, or arbitrary, . . . but rather the natural byproduct of practicing the patent.” Coorstek Bioceramics LLC, No. 92058796, 2022 WL 17547263, at *52 (Dec. 6, 2022). While the ‘816 patent may not have been intended to protect pink ceramic parts, CeramTec “readily concede[d] that a pink ceramic results from the implementation of the patent.” Id., at *51. CeramTec’s admissions that Biolox Delta practiced claims of the ‘816 patent and that the pink color was a direct result of chromia content supported the finding of functionality.

Federal Circuit Appeal

CeramTec appealed the TTAB’s decision to the Federal Circuit, raising several arguments, including alleged errors in the TTAB’s analysis and the improper shifting of the burden of proof. The Federal Circuit affirmed the TTAB’s ruling, addressing each argument in detail.

The court upheld the TTAB’s conclusion that the pink color was functional, reiterating and affirming the findings and analysis of the TTAB. It emphasized that the ‘816 patent and related patents provided substantial evidence of chromia’s utilitarian benefits and that the pink color was a function of the properties of the patent. It specifically rejected CeramTec’s contention that functionality required explicit disclosure of the pink color’s benefits in the patents. Instead, it found that the patents’ disclosure of chromia’s functional role within the protected process was sufficient.

Key Takeaways

• The CeramTec v. CoorsTek decision underscores and reinforces the principle that trademark protection cannot extend to functional product features and has broad implications on industries where the functional and aesthetic elements of a protected process might overlap.
• The case highlights the need for careful strategic planning when seeking overlapping patent and trademark protections and the potential pitfalls that might result.
• This is a clear example that companies must carefully consider the implications of disclosing functional advantages in patent filings, as these disclosures may later preclude trademark protection.
• For industries reliant on material science and functional design, the case provides a cautionary tale about the challenges of securing and maintaining trademark protection for features that may not have explicit utility themselves but are the byproduct of a utilitarian process.

The considerable duration of this matter was due to it being stayed during the Colorado litigation. There, following years of litigation and a bench trial, the Tenth Circuit ultimately remanded the case to the district court with instructions to dismiss with prejudice for lack of personal jurisdiction.